Teleflex on biotech and pharmaceutical patents the contentio n surrounding the recent United States Supr eme Court decision in KSR v. 2. KSR INT’L CO. v. TELEFLEX INC. Syllabus mechanical pedal to allow it to function with a computer-controlled throttle. The ‘ patent. Teleflex sued KSR International (KSR), alleging that KSR had infringed on its patent for an adjustable gas-pedal system composed of an.
This opinion is subject to formal revision before publication in the preliminary print of the United States Reports. Justice Kennedy delivered the opinion of the Court. The patent at issue, United States Patent No. The patentee is Steven J. The analysis is objective:. Against this background the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc.
While the sequence of these questions might be reordered in any particular case, the factors continue to define the inquiry that controls. KSR challenges that test, or at least its application in this case.
In car engines without computer-controlled throttles, the accelerator pedal interacts with the throttle via cable or other mechanical link. The pedal arm acts as a lever rotating around a pivot point.
In a cable-actuated throttle control the rotation caused by pushing down the pedal pulls a cable, which in turn pulls open valves in the carburetor or fuel injection unit.
The wider the valves open, the more fuel and air are released, causing combustion to increase and the car to accelerate. When the driver takes his foot off the pedal, the opposite occurs as the cable is released and the valves slide closed. Computer-controlled throttles open and close valves in response to electronic signals, not through force transferred from the pedal by a mechanical link. Constant, delicate adjustments of air and fuel mixture are possible.
A cable or mechanical link does not suffice for this purpose; at some point, an electronic sensor is necessary to translate the mechanical operation into digital data the computer can understand. Before discussing sensors further we turn to the mechanical design of the pedal itself. In the traditional design a pedal can be pushed down or released but cannot have its position in the footwell adjusted by sliding the pedal forward or back.
In cars with deep footwells these are imperfect solutions for drivers of smaller stature. Important for this case are two adjustable pedals disclosed in U. The pedal is also designed so that the force necessary to push the pedal down is the same regardless of adjustments to its location.
The Redding patent reveals a different, sliding mechanism where both the pedal and the pivot point are adjusted. We return to sensors. Well before Engelgau applied for his challenged patent, some inventors had obtained patents involving electronic pedal sensors for computer-controlled throttles. These inventions, such as the device disclosed in U. In addition to patents for pedals with integrated sensors inventors obtained patents for self-contained modular sensors.
A modular sensor is designed independently of a given pedal so that it can be taken off the shelf and attached to mechanical pedals of various sorts, enabling the pedals to be used in automobiles with computer-controlled throttles.
One such sensor was disclosed in U. The prior art contained patents involving the placement of sensors on adjustable pedals as well. In the Rixon pedal the sensor is located in the pedal footpad.
The Rixon pedal was known to suffer from wire chafing when the pedal was depressed and released. This short account of pedal and sensor technology leads to the instant case. KSR, a Canadian company, manufactures and supplies auto parts, including pedal systems. Ford Motor Company hired KSR in to supply an adjustable pedal system for various lines of automobiles with cable-actuated throttle controls.
KSR developed an adjustable mechanical pedal for Ford and obtained U. Teleflex is a rival to KSR in the design and manufacture of adjustable pedals. As noted, it is the exclusive licensee of the Engelgau patent. Engelgau filed the patent application on August 22, as a continuation of a previous application for U.
Claim 4 of the patent, at issue here, describes:. Attaching the sensor to the support member allows the sensor to remain in a fixed position while the driver adjusts the pedal. Before issuing the Engelgau patent the U. Patent and Trademark Office PTO rejected one of the patent claims that was similar to, but broader than, the present claim 4.
The claim did not include the requirement that the sensor be placed on a fixed pivot point. The PTO concluded the claim was an obvious combination of the prior art disclosed in Redding and Smith, explaining:.
Therefore it would have been obvious … to provide the device of Redding with the … means attached to a support member as taught by Smith.
Thus, the PTO did not have before it an adjustable pedal with a fixed pivot point. The patent issued on May 29, and was assigned to Teleflex. Teleflex later abandoned its claims regarding the other patents and dedicated the patents to the public.
After reviewing the pertinent history of pedal design, the scope of the Engelgau teleeflex, and the relevant prior art, the court considered the validity of the contested claim.
By direction of 35 U. The court then telrflex forth the relevant prior art, including the patents and pedal designs described above. Under the controlling cases from the Court of Appeals for the Federal Circuit, however, the District Court was not permitted to stop there.
The perception and reality of KSR International v. Teleflex
The court was required also to apply the TSM test. It reasoned 1 the state of the industry would lead inevitably to combinations of electronic sensors and adjustable pedals, 2 Rixon provided the basis for these developments, and 3 Smith taught a solution to the wire chafing problems in Teleflwx, namely locating the sensor on the fixed structure of the pedal.
This could lead to the combination of Asano, or a pedal like it, with a pedal position sensor. Had Engelgau included Asano in his patent application, it reasoned, the PTO would have found claim 4 to be an obvious combination of Asano and Smith, as it had found the broader version an obvious combination of Redding and Smith. As for Rixon, the court explained, that pedal suffered from the problem of wire chafing but was not designed to solve it.
When the patents were interpreted in this way, the Court of Appeals held, they would not have led a person of ordinary skill to put a sensor on the sort of pedal described in Asano. Rather, the court held, the District Court was obliged first to presume that the issued patent was valid and then to render its own independent judgment of obviousness based on a review of the prior art. The fact that the PTO had rejected the broader version of claim 4, the Court of Appeals trleflex, had no place in that analysis.
The Court of Appeals further held that genuine issues of material fact precluded summary judgment. This evidence, the court concluded, sufficed teleflx require a trial.
legal:supreme_court:teleflex-ksr – PatentBlurb
We begin by rejecting the rigid approach of the Court of Appeals. To this end, Graham set forth a broad inquiry and invited courts, where appropriate, to look at any secondary considerations that would prove instructive. This is a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.
Three cases decided after Graham illustrate the application of tekeflex doctrine. In United States v. AdamsU. It contained water, rather than the acids conventionally employed in storage batteries; and its electrodes were magnesium and cuprous chloride, rather than zinc and silver chloride.
The Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result. The Court relied upon the corollary principle that when the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious.
When Adams designed his battery, the prior art warned that risks were involved in using the types of electrodes he employed. The subject matter of the patent before the Court was a device combining two pre-existing elements: The device, the Court concluded, did not create some new synergy: The radiant-heat burner functioned just as a burner was expected to function; and the paving machine did the same. The two in combination did no more than they would in separate, sequential operation.
Finally, in Sakraida v. The principles underlying these cases are instructive when the question is whether a patent claiming the combination of elements of prior art is obvious. When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.
For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her telefpex.
Following these principles may be more difficult in other teleflec than it is here because the claimed subject matter may involve more teleeflex the simple substitution of one known element for another tfleflex the mere application of a teletlex technique to a piece of prior art ready for the improvement. Often, it will be necessary for a court to telleflex to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a kst having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.
To facilitate review, this analysis should be made teoeflex. As our precedents make clear, kdr, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.
When it kst established the requirement of demonstrating a teaching, suggestion, or motivation to combine known elements in order to show that the combination is obvious, the Court of Customs and Patent Appeals captured a helpful insight.
See Application of Bergel, F.
As is clear from cases such as Adamsa patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.
This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.
Helpful insights, however, need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents. The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.
The diversity of inventive pursuits and of modern technology counsels against limiting the analysis in this way. In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends. Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.
In the years since the Court of Customs and Patent Appeals set forth the essence of the TSM test, the Court of Appeals no doubt has applied the test in accord with these principles in many cases.
There is no necessary inconsistency between the idea underlying the TSM test and the Graham analysis. But when a court transforms the general principle into a rigid rule that limits the obviousness inquiry, as the Court of Appeals did here, it errs.
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